T.K. SHAWAL INDUSTRIES PVT. LTD. vs CONTROLLER OF PATENTS AND DESIGNS & ORS.

The appeal is arising out of an order passed by the

Deputy Controller of Patents and Designs on 20th January, 2016 in

connection with a petition for cancellation of registered Design No.252082

filed on 12th February, 2014 under Section 19 of the Designs Act, 2000 by

T.K. Shawal Industries Pvt. Ltd., the appellant herein.

The Deputy Controller has rejected the said application for

cancellation of the aforesaid design.

The grounds for cancellation taken before the Deputy Controller are:-

That the design has been published in India and/or in any other

country prior to the date of registration.

That the design is not a new or original design.

That the design is not registrable under the Designs Act, 2000.

That the design is not significantly distinguishable from designs or

combination of known design.

The appellant before the Deputy Controller has urged that the scarf of

the impugned design is anticipated by prior known designs. It was

submitted that the appellant was manufacturing and exporting handicrafts

and textile products especially shawls, scarves, basrawis and square shawls

of different styles, sizes and blends and exporter of its products to many

countries including Italy, Spain, Saudi Arabia, Kuwait, Qatar, Bahrain and

Yemen. The petitioners are manufacturing products similar to that of the

private respondent. The impugned registered design is an old traditional

work of Middle East particularly of Palestine. In support of prior publication

in India and abroad prior to the date of registration, a set of sale invoices

along with shipment details were submitted and it was stated that all these

documents were prior to the date of filing of the application for impugned

registration and thus anticipates the registration. In addition to the

aforesaid, it was contended that there is no novelty or originality attached to

the said design. The elements of the impugned designs were analysed as :

two sets of horizontal lines running parallel to each other wherein the

distance between said parallel lines are same and the lines are present at

the top and bottom ends of the scarf, further having two sets of vertical lines

running parallel to each other wherein distance between those lines are

same and present in both sides of the scarf. The horizontal and vertical lines cross each other at intersections formed in each of four corners of the

scarf wherein the pattern is visible in the back view.

The surface pattern of scarf was prior known and prior published in

India on the relevant dates as disclosed by the appellant in the cancellation

petition. Further scarf with similar shape and surface bearing registered

Design No.252082 dated 5th March, 2013 were disclosed to the public in

India by publication in tangible form used prior to date of filing of the

impugned design and as such confers no right on the respondents to seek

registration. The surface pattern applied to the impugned design is nothing

but combination of already known designs. There is no novelty in the

surface pattern of the ''scarf'' which is the subject matter of impugned design

registration.

The private respondent in its counter-statement and evidence

contended that the respondent No.3 in the month of February, 2013 with

his own intellect and innovative skill, honestly and bonafide conceived,

developed and adopted a new or original design scarf, commonly known as

Basrawi Arabic Square Rumaals consist of novel surface pattern. With a

view to protect the aforesaid design, on 19th February, 2013, the respondent

No.3 made an application which appears to have been received by the

respondent Nos.1 and 2 on 5th March, 2013 and numbered as application

No.252082 for registration under the provisions of the Designs Act, 2000.

The respondent after verification and satisfaction has issued a certificate of

registration of the aforesaid design, the said respondents did not find any

identical and/or similar design in the record of the designs branch of the Patent Office and was fully satisfied with the novelty and/or originality

and/or registrability of the design in favour of the respondent No.3. The

private respondent has thus prayed for dismissal of the cancellation

petition.

The registered Design No.252082 dated 5th March, 2013 was

registered under Class 02-05 in respect of application of such design to

Scarf. The representation consists of two pages comprising front perspective

view in first sheet and back perspective view of the article in the second

sheet. The novelty is claimed to be residing in the surface pattern of the

scarf. Disclaimers were provided in the representation sheets regarding

mechanical action, mode or principle of construction and in respect of

words, letters, numerals and trademarks. It was also stated specifically that

no claim is made by virtue of the registration in respect of any colour and

colour combination, if any, appearing in the design. The Deputy Controller

has relied upon the decision of the Hon''ble High Court in Gopal Glass

Works Ltd. Vs. Asstt Controller of Patents & Designs reported at 2006

(33) PTC 434 (Cal) and applied the tests therein in order to ascertain if the

design is new and original as also what would constitute prior publication.

The Controller has also relied upon Hello Mineral Water Pvt. Ltd. Vs.

Thermoking California Pure reported at 2000 (20) PTC 177 for

determining as to whether novelty could be claimed of the surface pattern.

The Deputy Controller has considered the invoices and documents annexed

to the cancellation application in order to ascertain whether the present

design was taught by a prior publication and on examination of the evidence on record has arrived at a finding that none of the documents and/or

invoices referred to the impugned design shows any prior publication of the

design. This Court is in agreement with the findings of the Deputy

Controller that the said invoices and/or documents would only show that

sale of certain types of shawls but does not show any particular design of

the article except stating that the articles may be in various colours. In

absence of any cogent evidence to show that the pattern disclosed in the

application for registration is taught by a prior published document, the

findings of the Controller who is an expert in the field do not call for any

interference. The Deputy Controller did not stop there. The Deputy

Controller applied its mind to find out whether the impugned registration

could be considered to be devoid of newness in view of certain documents

claimed to have been downloaded from Wikipedia. Each of the said

documents were scrutinized and the finding of the Deputy Controller was

that the pictures show variety of dresses including scarves in a different

colour and pattern but none of these documents ascertain the details of the

publication and the source of said documents. The search results are all

subsequent to the date of registration and there is no evidence before the

Deputy Controller to show that the scarves with different pattern and colour

were published prior to the date of registration.

Mr. Rudraman Bhattacharya, the learned Counsel appearing on

behalf of the appellant has referred to the decision of the learned Single

Judge in The Wimco Limited Vs. Meena Match Industries reported at

1983 (3) PTC 373 (Del) Paragraphs 11, 12, and 13 in support of the submission that the registered impugned design was well-known and

published prior to the date of application of the design of the private

respondent. In view of the aforesaid discussion, I am unable to apply the

ratio of the said decision as on appreciation of evidence, the Deputy

Controller has arrived at a definite finding which cannot be said to be

perverse.

In ITC Limited Vs. Controller of Patents & Designs reported at

2017 (2) CHN (Cal) 367 this Court had the occasion to consider the

question of novelty and originality of a design as well as what would

constitute a prior publication. It was held that a design is an idea or

conception as to features of shape, configuration, pattern or ornament

applied to an article. Although an idea may be potentially capable of

registration, in fact, it must be reduced to visible form to be identified with.

The design must be such that in the finished article, the features of it appeal

to the eye and are judged solely by the eye. The Court followed the dictum

of Buckley L.J. as to the distinction between new or original.

The surface features, particularly if they are pronounced, may be

treated as features of shape or configuration, as in Cow & Coy Ltd. Vs.

Cannon Rubber Manufacturers Ltd. reported at (1959) RPC 240 at 347

where it was held that a series of ribs on the surface of a hot water bottle

were features within the scope of the statement of novelty which claimed

such features. The novelty in the instant case is also claimed on surface

pattern and the Deputy Controller has applied its mind to such features before concurring with the earlier finding that novelty resides in the surface

pattern of scarf as illustrated.

In Anuradha Doval Vs. The Controller of Patents and Designs &

Ors. being AID No.1 of 2015 on 13th April, 2017, this Court had the

occasion to consider what would constitute in the prior publication and after

considering the laws on the subject held:-

"if a document is to constitute prior publication, then a reader of it, possessed ordinary knowledge of the subject, must from his reading of the document be able, at least, to see the design in his mind''s eye and should not have to depend on his own originality to construct the design from the ideas which the document may put into his head".

The bills and invoices disclosed by the appellant before the Deputy

Controller does not disclose anything about the design and even it appears

that the articles covered under the said invoices only relate to ''shawls'' and

not to ''scarfs'' especially when they fall under different class of goods.

The appellant at the appellate stage has made an application being

G.A. No.1492 of 2017 for giving leave to the appellant to rely upon the trade

mark applications filed by the appellant on 27th February, 2013. Apart from

the fact that the appellant has failed to demonstrate that in spite of due

diligence, the appellant was unable to produce the said documents before

the Deputy Controller where an assertion is made in the representation that

they were using the said mark since April, 1992 the said document does not

assist the appellant in any manner. The tests to be applied for registration

of trade mark are entirely different from registration of design. The

considerations are also different. The application for the registration by the private respondent was made on 19th February, 2013. The documents

disclosed before the Deputy Controller as well as before this Court clearly

shows that the said application was made on 19th February, 2013 but was

received by the office of the Controller of Patents on 5th March, 2013. Once

the said application is allowed under Section 5(6) of the Design Act, 2000, it

must relate back to the date of registration of the application. It was argued

before the Deputy Controller that the application was made after 19th

February, 2013 or after 27th February, 2013. The appellant wanted to take

advantage of the apparent mistake in the certificate of registration issued by

the respondent No.1 which mistakenly has granted the registration from 5th

March, 2013. It is an obvious mistake. The private respondent No.3

appears to have overlooked it also. Since the mistake is apparent, the

respondent No.1 is directed to make necessary correction in the certificate of

registration.

G.A. No.1492 of 2017 stands dismissed.

AID No.3 of 2016 also stands dismissed.

However, there shall be no order as to costs.

Urgent Photostat certified copy of this judgment, if applied for, be

given to the parties on usual undertaking.